Paper 7
`Filed: December 29, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`REFLECTIX, INC.
`PETITIONER
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`V.
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`PROMETHEAN INSULATION TECHNOLOGY LLC
`PATENT OWNER
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`CASE IPR2015–01982
`PATENT 8,936,847
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`1
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`1 In accordance with 37 C.F.R. § 42.20(b), the parties received authorization
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`from the Board to file this motion December 28, 2015 via email.
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`Filed: December 29, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`REFLECTIX, INC.
`PETITIONER
`
`V.
`
`PROMETHEAN INSULATION TECHNOLOGY LLC
`PATENT OWNER
`
`
`
`CASE IPR2015–01982
`PATENT 8,936,847
`
`
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`
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`1
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`1 In accordance with 37 C.F.R. § 42.20(b), the parties received authorization
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`from the Board to file this motion December 28, 2015 via email.
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`Joint Motion to Terminate
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`IPR2015–01982 (8,936,847)
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`Brief Description
`No.
`2001 Patent License Agreement between Promethean Insulation Technology
`LLC and Reflectix, Inc. (Dec. 18, 2015)
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`i
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`Joint Motion to Terminate
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`IPR2015–01982 (8,936,847)
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`Pursuant to 37 C.F.R. § 42.74 (“The parties may agree to settle any
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`issue in a proceeding”), Petitioner, Reflectix, Inc. (“Reflectix”), and Patent
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`Owner, Promethean
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`Insulation Technology LLC
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`(“Promethean”;
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`collectively “Parties”), jointly request termination of this Inter Partes
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`Review (“IPR”).2
`I.
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`The fact that this IPR is in a very early stage militates heavily in favor
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`of terminating this proceeding. The Preliminary Response deadline was
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`December 29, 2015. See Paper 3; see also § 42.107(b). The Board has not
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`made an institution decision, and therefore the proceeding is still in the
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`preliminary phase. See § 42.2 (“Preliminary Proceeding begins with the
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`filing of a petition for instituting a trial and ends with a written decision as
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`to whether a trial will be instituted.”) (emphasis in original). The Board
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`has highlighted the early stage of a proceeding as an important factor in
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`favor of termination. See, e.g., Samsung Elecs. Co. v. Nvidia Corp., No.
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`2 The Parties have also filed (or will soon file) Joint Motions to Terminate in
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`the co-pending IPRs concerning patents related to the patent-at-issue in this
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`proceeding: IPR2015–00039 (7,935,410); IPR2015–00042 (7,935,411);
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`IPR2015–00044 (8,327,601); IPR2015–00045 (8,343,614); and IPR2015–
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`00047 (8,221,871).
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`Page 1
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`Joint Motion to Terminate
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`IPR2015–01982 (8,936,847)
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`IPR2015-01270, slip op. at 3–4 (PTAB Dec. 9, 2015) (Paper 11)
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`(terminating proceeding after Preliminary Response but before Institution
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`Decision despite Patent Owner’s objections). Given the stage of the
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`proceeding, this key factor supports ordering termination.
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`Indeed, by terminating the proceeding at this stage, the Board will
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`conserve its resources. While 35 U.S.C. § 317 mandates that “[a]n inter
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`partes review instituted under this chapter shall be terminated with respect
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`to any petitioner upon the joint request of the petitioner and the patent
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`owner” after the filing of any related settlement agreements (emphasis
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`added), the Board need not expend time and effort, just to have the Parties
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`renew this request should the Board institute a trial.
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`Moreover, the Office Patent Trial Practice Guide recognizes the
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`benefits of settlement:
`There are strong public policy reasons to favor
`settlement between the parties to a proceeding. The
`Board will be available
`to facilitate settlement
`discussions, and where appropriate, may require a
`settlement discussion as part of the proceeding.
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`77 Fed. Reg. 48,419, 48,768 (Aug. 14, 2012). Terminating the proceeding
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`in light of the Parties’ settlement promotes this public policy.
`II.
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`Per § 42.74(b), a written settlement agreement made in connection
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`Page 2
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`Joint Motion to Terminate
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`IPR2015–01982 (8,936,847)
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`with the termination of this IPR is being concurrently filed with the Board
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`along with a request to treat the settlement agreement as business
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`confidential and to keep the agreement separate under § 42.74(c). [Paper 6
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`& Ex. 2001].
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`The Parties hereby jointly certify that there are no other written or
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`oral agreements or understandings, including any collateral agreements,
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`between them, including but not limited to licenses, covenants not to sue,
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`confidentiality agreements, payment agreements, or other agreements of
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`any kind that have been made in connection with or in contemplation of the
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`termination of Case No. IPR2015–01982 pending before the Patent Trial
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`and Appeal Board or the Parties in related civil proceedings styled
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`Promethean Insulation Tech. LLC v. Reflectix, Inc., No. 2:15-cv-00028
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`(E.D. Tex. filed Dec. 22, 2015) and Promethean Insulation Tech. LLC v.
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`Sealed Air Corp. et al., No. 2:13-cv-01113 (E.D. Tex. filed Dec. 18, 2013).
`III.
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`The Board has indicated that it expects a proceeding will terminate
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`upon joint motion after the parties have filed a settlement agreement. See
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`Oracle Corp. v. Cmty. United IP, LLC, CBM2013-00015, slip op. (July 25,
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`2013) (Paper 13) (citing Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,765–66 (Aug. 14, 2012)). In light of the above, the Parties
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`Page 3
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`Joint Motion to Terminate
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`IPR2015–01982 (8,936,847)
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`respectfully request the Board to grant this motion for termination.
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`Dated: December 29, 2015
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`
`
` /Nathan J. Rees/
`Nathan J. Rees (Reg. No. 63,820)
`NORTON ROSE FULBRIGHT US LLP
`2200 Ross Avenue, Suite 3600
`Dallas, Texas 75201–7932
`Tel: 214.855.7164
`Fax: 214.855.8200
`nate.rees@nortonrosefulbright.com
`Attorney for Petitioner,
`REFLECTIX, INC.
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`Respectfully submitted,
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` /Joshua S. Wyde/
`Joshua S. Wyde (Reg. No. 57,698)
`THE LAW OFFICE OF JOSHUA S WYDE
`3740 Greenbriar St. #980609
`Houston, TX 77098–0609
`Tel: 713.482.1916
`Fax: 713.466.6563
`jwyde@wydelegal.com
`Counsel for Patent Owner,
`PROMETHEAN INSULATION
`TECHNOLOGY LLC
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`Page 4
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on the twenty-ninth day of December,
`2015, a complete and entire copy of the foregoing “REFLECTIX, INC.
`AND PROMETHEAN INSULATION TECHNOLOGY LLC’S JOINT
`MOTION TO TERMINATE PROCEEDING,” including exhibits, if any, was
`served on the petitioner, per consent, at the electronic correspondence
`addresses shown below.
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`
`Nathan J. Rees, Lead Counsel (Reg. No. 63,820)
` nate.rees@nortonrosefulbright.com
` Phone: 214.855.7164
`Wayne Livingstone, Backup Counsel (Reg. No. 60,988)
` wayne.livingstone@nortonrosefulbright.com
` Phone: 214.855.8386
`NORTON ROSE FULBRIGHT US LLP
`2200 Ross Avenue,
`Suite 3600, Dallas, TX 75201
`Fax: 214.855.8200
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`Dated: December 29, 2015
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`
` /Joshua S. Wyde/
`Joshua S. Wyde (Reg. No. 57,698)
`THE LAW OFFICE OF JOSHUA S WYDE
`3740 Greenbriar St. #980609
`Houston, TX 77098–0609
`Tel: 713.482.1916
`Fax: 713.466.6563
`jwyde@wydelegal.com
`Counsel for Patent Owner,
`PROMETHEAN INSULATION
`TECHNOLOGY LLC
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